agile.com

WIPO Arbitration and Mediation Center

The Complainant is Agile Software Corporation, a Delaware corporation with principal place of business at One Almaden Boulevard, San Jose, California 95113-2253, U.S.A. The Complainant is represented by Martin Myers, Esq.; Andrew P. Valentine, Esq.; and Eliane Setton, Esq., Gray Cary Ware & Freidenrich LLP, 400 Hamilton Avenue, Palo Alto, California, U.S.A.

The Respondent is Compana LLC, a company located at 2030 East Jackson Street, #111501, Carrollton, Texas 75011-1501, U.S.A.

The registrar for the disputed domain name is Secura GmBH (Secura), a German company located at Am Alten Posthof 4-6, D-50667 Cologne, Germany.

This dispute is to be resolved in accordance with the Uniform Policy for Domain Name Dispute Resolution (the Policy) and Rules (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Center's Supplemental Rules for Uniform Domain Name Dispute Resolution (the Center, the Supplemental Rules).

The Complaint was filed on April 14, 2001. On April 18, 2001, the Center requested that the Registrar Secura ascertain the registrant for the domain name <agile.com>. Secura never responded to the Center, but the Whois database confirms that the registrar for the disputed domain name is Secura.

On April 24, 2001, the Center forwarded a copy of the Complaint to Respondent by registered mail and by e-mail and this proceeding officially began. Respondent's Response was received by the Center on May 11, 2001.

The Administrative Panel submitted a Declaration of Impartiality and Independence by June 18, 2001, and the Center proceeded to appoint the Panel on June 19, 2001. The Panel finds the Center has adhered to the Policy and the Rules in administering this proceeding.

This Decision was due by July 3, 2001, but the Center granted the Panel an extension until July 23, 2001.

The Complainant describes itself as a software provider of collaborative manufacturing commerce solutions that speed the build and buy process across virtual manufacturing networks. Complainant's key products include AGILE ANYWHERE, AGILE BUYER and AGILE EHUB.

Prior to this proceeding, the Complainant had been seeking for some time to obtain the disputed domain name <agile.com>. In this regard, prior to January 2001, the Complainant tried unsuccessfully to acquire the disputed domain name from then-owner Lucent Technologies (Lucent). Lucent refused to transfer the domain name to the Complainant but allowed the registration to lapse on April 5, 2001. The Complainant had been closely monitoring the disputed domain name registration held by Lucent and attempted to register it on the day it lapsed. But the Respondent and its registrar Secura beat the Complainant to the punch.

On April 6, 2001 (Complaint Exhibit C), the Complainant sent a letter to the Respondent demanding the Respondent transfer the disputed domain name to the Complainant and cease and desist from using the mark Agile. The Respondent refused to transfer the domain name and claimed it was using the domain name for its generic sense (Respondent letter to Complainant dated April 10, 2001, Response Exhibit E). The Complainant now seeks transfer of the domain name in this proceeding.

- Agile's trademarks are arbitrary in the context in which they are used and are, therefore, entitled to the broadest protection available under the law.

- The strength of Agile’s brand recognition through its trademarks is evidenced by strong and increasing sales. A significant portion of these sales occurred due to Agile's extensive marketing of its goods and services over the Internet and was initiated through Agile's website, <agilesoft.com>.

- It cannot reasonably be disputed that Respondent's domain name <agile.com> is confusingly similar to Complainant’s trade name and trademarks as well as to Complainant's registered domain name, <agilesoft.com>. The domain name <agile.com> incorporates in its entirety the dominant and arbitrary component of Complainant’s trade name and trademarks, namely Agile.

- The Respondent has never used the Agile name or mark in association with any goods, products or services in any geographic area, nor does Respondent's corporate name, Compana LLC, suggest any element of an Agile mark.

- Respondent and Mr. Baron have declined to identify the manner in which they intend to use <agile.com>, and their responses to Complainant's inquiries indicate they have no legitimate use.

- Complainant's federal trademark registration and applications for Agile-component trademarks establish a clear priority in use of the Agile marks, precluding other parties such as Respondent from utilizing similar names to trade on Agile's good will.

- Complainant's use of the domain name <agilesoft.com> predates registrant's very recent registration of <agile.com>, making Agile the senior user of the Agile mark.

- Respondent's registration of the <agile.com> domain name is in "bad faith" as that term is defined under the Policy.

- The mere fact that Respondent has registered a domain name identical to the dominant and arbitrary component of Complainant's trade name, trademarks and domain, without any independent rights to the mark, is by itself persuasive evidence of Respondent’s bad faith.

- Respondent plainly is attempting to attract Internet users for commercial gain by creating a likelihood of confusion with Complainant’s marks and the popularity of Complainant’s products. Numerous customers have indicated that they have been confused by attempts to access Agile's products and services through <agile.com>.

- Complainant's independent discovery of Respondent’s use of Secura and installation of a pay-per-search device also provides strong and persuasive evidence that Respondent has appropriated the domain name in bad faith, with no legitimate interest.

- Respondent is using the many domain names it owns to direct Internet users to use a search engine which in turn pays Respondent for each search run through that search engine. Although Respondent's payment per search is fairly low, Respondent's gains nonetheless could be significant due to the large number of domain names apparently owned by Respondent and due to the potential traffic Respondent's websites may receive. Accordingly, while Respondent has not directly offered to sell the domain name <agile.com> to Complainant, Respondent clearly is seeking to trade on Complainant's good will by obtaining traffic to the <agile.com> website for commercial gains.

- Respondent's posting of a search engine on the websites it owns is indicative of Respondent’s intent to illustrate its sites' value and intent to sell them. By posting a search engine which pays money to Respondent for each search run through that search engine on the website it owns, Respondent clearly advertises that its sites receive a large amount of traffic and are valuable and, therefore, advertises its intent to sell the websites. In addition, bad faith does not require an offer to sell the domain name directly to a complainant or its competitors.

- Respondent effectively has prevented the Complainant from using its own mark in the marketplace.

Respondent's Contentions:

- Complainant has a strong desire to obtain the domain name <agile.com> from Respondent and has made an overzealous effort to do so. Since discovering on April 5, 2001, that it had been unsuccessful in registering the domain name, Complainant has attempted to appropriate the domain name from Respondent by baseless allegations, threats of legal action, and interfering with Respondent's business relation with its registrar.

- Complainant misrepresents Respondent's relationship with Secura GmbH. Secura is quite simply, a domain name registrar. It enjoys no special privileges from ICANN and offers none to Respondent.

- Respondent's primary business is not registering previously owned domain names as soon as they become available. Respondent is building an e-mail business based solely on generic domain names.

- As stated by Secura GmbH, Secura does not, for a charge, reserve the right to purchase domain names that are about to expire.

- At the time it registered <agile.com>, Respondent was unaware of Complainant’s trademarks and unaware of Complainant’s existence.

- Respondent has never posted a website at the URL <agile.com>.

- Complainant's accusation that Respondent clearly is seeking to trade on Complainant's goodwill by drawing traffic to the <agile.com> website for commercial gain is unfounded and, on its face, false since Respondent has never had a website at that URL.

- Complainant's allegation that Respondent clearly advertises that its sites receive a large amount of traffic and are valuable is false. Respondent has never advertised that any of its sites receive large amounts of traffic and are valuable. Further, Respondent has never advertised any domain name for sale. Respondent is not in the business of selling domain names, and Complainant can offer no proof to dispute that fact.

- The word "agile" is a common, generic English language word meaning "able to move quickly and easily: nimble." Complainant has no more exclusive rights over the word "agile" than it has exclusive rights over the word "software".

- ICANN UDRP panels and courts have addressed the issue of generic word domain names extensively, and both have consistently held that a generic domain name's rightful and legitimate owner is the party who registers the name first, regardless of other’s trademarks.

- According to the US Patent and Trademark Office, at least ninety-three registrations involving the common word "agile" have been issued to companies other than Complainant. Of these trademarks, a large number are used commercially on the Internet. In addition, more than 1,000 domain names containing the word "agile" are registered to companies other than Complainant.

- Complainant has not produced evidence that Respondent's domain name has caused confusion.

- In the remote chance that a consumer types <agile.com> into their browser in hopes of arriving at Complainant's site, there is no chance of "initial interest" or other confusion.

- Established in May of 2000, Respondent's business model is to provide web-based Internet e-mail service to users. Respondent's business model is based on that of <mail.com> and <mailbank.com> in which a key element of their business is providing their customers a broad choice of domain names to match their interest, profession, surname, or initials. Respondent's service will enable users to have a personalized, permanent and portable Internet address.

- Courts have recognized that the use of a domain name to provide email services is not use "as a mark" and therefore can not infringe or dilute. (Avery Dennison Corp. v. Sumpton, 1999 WL 635767 (9^th Cir. August 23, 1999).

- Complainant's entire premise in alleging bad faith is that Respondent intentionally registered the domain name to trade on Complainant’s good will. As previously stated, Respondent did not know of Complainant’s existence when it registered the domain name and Respondent has never had a website at <agile.com>, so it can not possibly be trading on Complainant's goodwill. Moreover, Respondent has never offered to sell the domain name to Complainant or attempted to create confusion.

The Policy requires that the Complainant prove the following in order to obtain transfer of the disputed domain name (the Policy, paragraph 4(a)(i-iii):

- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- the Respondent has no rights or legitimate interests in respect of the domain name; and

- the domain name was registered and is being used in bad faith

The Complainant has provided a printout for the Panel of the Complainant’s United States principal register trademark registration for the mark "Agile Software" dated February 27, 2001, reg. no. 2,431,890 (Complaint Exhibit I). The Complainant has been pursuing its software manufacturing business using this mark since 1995. The distinctive part of the Complainant’s mark is the word "agile", a mark that suggests the Complainant’s software is quick and nimble.

The disputed domain name <agile.com> is confusingly similar to the Complainant’s mark Agile Software, since it includes the distinctive part of the mark. The Panel thus finds the Complainant has satisfied paragraph 4(a)(i) of the Policy.

The Complainant claims the Respondent is infringing its trademark rights without authorization. The Respondent, on the other hand, claims to be using the disputed domain name in its ordinary, non-mark sense and contends that this use is borne out by the evidence from its business plan and its execution during the year the Respondent has been in business. This plan involves the use of generic names as mailbox addresses with search engines in them.

The Panel agrees with the Respondent that there is nothing to prevent it from using the disputed domain name in its dictionary, adjectival sense, as long as that is what it is doing. Certainly, as the parties agree, the Respondent to date has only registered domain names whose non-mark or generic meaning is readily apparent: e.g., <custodians.com>, <insulator.com>, <greenlawn.com>, <curtainrod.com> (Response p. 9). And although the Respondent has not as yet begun to use the disputed domain name, it is true, as Respondent points out, that the Complainant initiated intense legal action as soon as Respondent registered the disputed domain name. As the Respondent’s company seems to be quite a small one, it stands to reason the Respondent has not had much time to implement its business plan regarding the disputed domain name or perhaps preferred to await the outcome of this and the other pending legal proceedings.

The Panel finds the Respondent has established legitimate rights and interests in the disputed domain name per the Policy at 4(c)(i): "before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;" (and see General Machine Products Company, Inc. v. Prime Domains a/k/a Telepathy, Inc., ICANN/NAF Case No. FA0001000092531)

N.B. Even though the Panel has found the Respondent has a legitimate interest in the disputed domain name, the Panel would like to point out that the Respondent has erroneously informed the Panel that the U.S. 9^th circuit has held that using a domain name as an e-mail address means not using the domain name as a trademark (Avery Dennison Corp. supra) Instead, the Court there held that using common family surnames as e-mail addresses, without more, was not using them as trademarks. Thus the Panel's finding here is not based simply on the fact that the Respondent is using the disputed domain name as an e-mail address, but on the fact that the Repsondent's intended use is apparently a non-mark use.

Since the Panel has found the Respondent has shown it has legitimate rights and interests in the disputed domain name, it is not, strictly speaking, necessary for the Panel to discuss bad faith in this proceeding. However, as there is a strong convergence of views among the Panel on this issue, the Panel has decided to discuss its finding on this issue as well.

The Complainant mainly contends the Respondent is in bad faith because it registered the disputed domain name to sell it to the Complainant or a competitor in violation of the Policy at 4(b)(i). The Complainant attempts to flesh out this argument by pointing out that although the Complainant assiduously tracked the disputed domain name and attempted to register it when it was abandoned by Lucent, the Respondent succeeded in registering the domain name first. The Complainant claims this shows the Respondent was aware of the Complainants trademark interest in the domain name. The Complainant further claims that the Respondent’s practice of placing counting devices on its other websites is evidence the Respondent is attempting to contrive a price for the disputed domain name in order to sell it.

The Panel is unconvinced by the Complainant’s largely speculative argument. There is no evidence the Respondent intended to try to sell this domain name to the Complainant. As stated above, the name agile can readily be seen to fit in with the many other names the Respondent seems to have registered for their generic meaning. (see generally International HoldingGmBH & Co. Kommanditgesellschaft v. Beyonet Services and Stephen Urich, ICANN/WIPO Case No. D2000-0161, May 12, 2000)

The Complainant is still a small company and has offered no evidence of its notoriety other than its Complaint statements about itself. Even if we allow for the fact that the Complainant might be well-known in a niche software market, there is insufficient evidence the Respondent knew of the Complainant’s existence or was trying to tap into the goodwill the Complainant may have acquired for its Agile Software products.

The Complainant also briefly asserts at the end of the Complaint (p.14) that the Respondent was attempting to divert traffic from the Complainant's website for commercial gain (prohibited by the Policy at 4b(iv). However, the Complainant makes no attempt to back up this assertion, and the Panel has found no evidence in the record to support it.

Thus, the Panel finds the Respondent did not register and is not using the disputed domain name in bad faith.

The Panel has found the Respondent registered a domain name confusingly similar to the Complainant’s trademark. However, the Panel has also found the Respondent has legitimate rights and interests in the ordinary meaning of the domain name. Finally, the Panel finds the Respondent did not register and is not using the domain name in bad faith.

In accord with the Policy paragraph 4(i) and Rule 15, the Panel orders that the Complaint be dismissed and that the disputed domain name, <agile.com>, remain registered with the Respondent, Compana LLC.

Dennis A. Foster
Presiding Panelist

M. Scott Donahey
Panelist

Milton Mueller
Panelist

Dated: July 23, 2001